PubPat Files Request for Reconsideration of MS's Patent on the FAT File System

Thursday, April 15 2004 @ 03:57 PM EDT

The Public Patent Foundation has some news for us. They just filed a formal request with the USPTO today, asking them to revoke Microsoft's patent on the FAT file system because, they say, it's causing significant public harm. "Microsoft is using its control over the interchange of digital media to aid
its ongoing effort to deter competition," the request states. With the request, they filed some prior art to demonstate that the patent was obvious and shouldn't have been granted in the first place.

Interested to see what such a request for reconsideration looks like? They have it online, so we can learn. Just go to the page and click on the top PDF on the page, "REQUEST FOR EX PARTE REEXAMINATION OF A PATENT."

The first paragraph says PubPat respectfully requests ex parte reexamination under 35 U.S.C. Sections 302-307 and 37 C.F.R. Section 1.510 of every claim of US Patent No. 5,579,517 issued Nov. 26, 1996 to Reynolds et al. ("'517 patent") and assigned to Microsoft Corporation "because they are all invalid under 35 U.S.C. Section 103 and their existence is causing significant public harm." On page 4, there is a chart, with what the patent is for on the left side and prior art showing the same thing being done on the right. If you'd like to read about patent law, Bitlaw has some information. Here's the referenced U.S.C. Section 302, which is the part about a request for reconsideration, and for the rest, 303-307, just click on "Next Section". Section 103, which is about a patent having to be non-obvious, is here. And 37 C.F.R. (Code of Federal Regulations) Section 1.510 is here. Here is the patent.

NEW YORK -- The Public Patent Foundation filed a formal request with the
United States Patent and Trademark Office today to revoke Microsoft
Corporation's patent on the FAT File System, touted by Microsoft as being
"the ubiquitous format used for interchange of media between computers, and,
since the advent of inexpensive, removable flash memory, also between
digital devices." In its filing, PUBPAT submitted previously unseen prior
art showing the patent, which issued in November 1996 and is not otherwise
due to expire until 2013, was obvious and, as such, should have never been
granted.

"Microsoft is using its control over the interchange of digital media to aid
its ongoing effort to deter competition," states PUBPAT's Request for Ex
Partes Reexamination of U.S. Patent No. 5,579,517. "The '517 patent is
causing immeasurable injury to the public by serving as a tool to enlarge
Microsoft's monopoly while also preventing competition."

Last fall, Microsoft began to demand royalty bearing licenses for the entire
portfolio of patents around the FAT File System. However, the fact that
Microsoft has not offered licenses for use in Free and Open Source Software
has led some to speculate that Microsoft intends to use its patents to fight
the competitive threat posed by Free Software.

"We'd like to give Microsoft the benefit of the doubt and believe that they
are not adopting a strategy of foreclosing competition through the use of
dubious patents," said Dan Ravicher, PUBPAT's Executive Director and
Founder. "Unfortunately, their past anticompetitive behavior combined with
their recent launch of a comprehensive patent assertion campaign causes us
to have serious concerns about their intentions."

Although PUBPAT's filing only directly deals with one patent, the fact that
it is the oldest of the patents in the FAT File System portfolio makes it
more likely that, once it is held invalid by the Patent Office, each of the
other patents will be viewed similarly.

"In the end, our beef is not with Microsoft per se," says Ravicher. "It's
with our broken patent system that is completely failing to ensure only
deserving patents get issued."

The Request for Reexamination can be found at
http://www.pubpat.org/Protecting.htm.

The Public Patent Foundation ("PUBPAT") is a not-for-profit legal services
organization working to protect the public from the harms caused by the
patent system. PUBPAT provides the general public, particularly those
persons or businesses otherwise deprived of access to the system governing
patents, with representation, advocacy, and education. To be kept informed
of PUBPAT News, subscribe to the PUBPAT News List by sending an email with
"subscribe" in the subject line to news-request@pubpat.org.

*******************************************

I asked Dan what happens next, and here is his reply:

"The Patent Office has three months to decide whether or not our filing
raises 'a substantial new question of patentability.' If they believe it
does, then they will order a reexamination of the patent. Microsoft can
submit an opening statement regarding the substantial new question, if they
want, to which PUBPAT is allowed a response. After that, or if Microsoft
doesn't file an opening statement, the reexamination begins and proceeds
according to the exact same process as regular examination of a patent
application, meaning that PUBPAT is excluded from any further correspondence
with the patent office about the matter."

"'Free software is licensed in a way that prohibits royalties - you
can't pay Microsoft a license and distribute your software under a
free software license,' says Dan Ravicher, executive director of the
Public Patent Foundation which has filed the request to invalidate the
patent. . . .

"According to the Public Patent Foundation's request, 'the '517 patent
is causing immeasurable injury to the public by serving as a tool to
enlarge Microsoft's monopoly while also preventing competition from
Free Software.' 'Microsoft is using its control over the interchange
of digital media to aid its ongoing effort to deter competition from
Free and Open Source Software. Specifically, Microsoft does not offer
licenses to the '517 patent for use in Free Software. As such, the
'517 patent stands as a potential impediment to the development and
use of Free Software because Free Software users are denied the
ability to interchange media with machines or devices running
Microsoft owned or licensed software.'

"Ravicher told The Register that he'd welcome a move by Microsoft to
license their portfolio for use in free software under reasonable
royalty-free terms."